LexM/S. SATYAM INFOWAY LTD. versus M/S. SIFFYNET SOLUTIONS PVT. LTD.
Open in Lexace · Ask the AI about this caseJudgment (excerpt)
MIS. SATYAM INFOWAY LTD.
A
v.
MIS. SIFFYNET SOLUTIONS PVT. LTD.
MAY 6, 2004
B
[RUMA PAL AND P. VENKATARAMA REDDI, JJ.)
Trade Marks Act, 1999 :
Ss. 2(z) and 2(zb)-"Service"-''Trade mark"-Internet domain
names-Action for passing off-Held, a domain name may pertain to C
provision of "services" within the meaning of s.2(z)-lnternet domain
name are subject to legal norms applicable to other intellectual properties
such as trade marks-A domain name could found an action for passing
off-In view of the nature of the business, it is necessary to maintain
exclusive identity which a domain name requires-On facts, prima facie, D
apart from being the prior user, plaintiff has adduced sufficient evidence
to show that the public associates the trade name 'sify' with the plaintiff-
Trial court rightly granted temporary injunction in favour of the plaintiff-
Uniform Domain Name Disputes Resolution Policy, 1999-rr. 2, 4(a) and
4(b)-Intellectual Property Rights.
E
The appellant, a company providing internet and computer
services, registered with the Internet Corporation for Assigned Names
and Numbers (ICANN) and the Word Intellectual Property
Organization (WIPO), in the year 1999, several domain names prefixing F
thereto the word 'sify', which it claimed to have invented. The
respondent started its business of internet marketing and claimed to
have registered with ICANN its domain names using the word 'siffy'
as part of the said domain names in the year 2002. The appellant filed
a suit against the respondent contending that the latter was passing off
its business and services by using former's business name and domain G
name. The civil court granted a temporary injunction in favour of the
plaintiff holding that it was the prior user of the trade name 'sify' and
had earned good reputation thereunder, and that use of the similar
domain name by the defendant would cause a confusion in the mind
of the general public. It was also observed that the balance of H
465
466
SUPREME COURT REPORTS [2004] SUPP. 2 S.C.R.
A convenience laid towards granting an injunction in favour of the
plaintiff. The defendant successfully challenged the interlocutory order
in appeal before the High Court.
The appeal filed by the plaintiff before the Supreme Court was
B resisted by the respondent-defendant contending that a domain name
is merely an address on the internet and could not be confused with
'property name' such as Trade Marks; and the registration of a
domain name with ICANN is a contract with registration authority
allowing communication to reach the owner's computer via internet
C links channeled through registration authority's server and it does not
confer any intellectual property rights.
Allowing the appeal, the Court
HELD : I. Internet domain names are subject to the legal norms
D applicable to other intellectual properties such as trade marks. The
court below rightly proceeded on the basis that principles relating to
passing off actions in connection with trade marks are applicable to
dom1dn names. A domain name may be a word or name which is capable
of distinguishing the subject of trade or service made available to potential
E users of the internet. With the increase of commercial activity on the
internet, a domain name is also used as a business identifier. Therefore,
the domain name not only serves as an address for internet communication
but also identifies the specific internet site. In the commercial field, each
domain name owner provides information/services which are associated
F with such domain name. Thus a domain name may pertain to provision
of services within the meaning of s.2(z) of the 'Trade Marks Act, 1999.
Consequently a domain name as an address must,ofnecessity, be peculiar
and unique and where a domain name is used in connection with a
business, the value of maintaining an exclusive identity becomes critical.
G
(469-D; 474-F; 470-H; 471-A; 472-A, G, 8-E]
Rediff Communication Ltd. v. Cyberbooth and Anr,, AIR {2000)
Born. 27; Yahoo Inc. v. Akash Arora, {1999) PTC 19 201; Dr. Reddy's
Laboratories Ltd. v. Manu Kosuri, {2001) PTC 859 {Del.); Tata Sons Ltd.
v. Manu Kosuri, (200°1) PTC 432 {Del); Acqua Minerals Ltd. v. Pramod
H Borse & Anr,, (2001) PTC 619 (Del.) and Info Edge (India) Pvt. Lta. &
SATY AM INFOW A Y LTD. v. SIFFYNET SOLUTIONS PVT. LTD. 467
Anr. v. Shailesh Gupta & Anr., (2002) 24 PTC 355 (Del.), approved. A
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